Superbass Tournament Trail, Inc.

Trademark Trial and Appeal Board

Aug 15, 2007

No. 76634358 (T.T.A.B. Aug. 15, 2007)

Mailed:
August 15, 2007
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Superbass Tournament Trail, Inc.
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Serial No. 76634358
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Paul M. Denk, Esq. for Superbass Tournament Trail, Inc.

Tejbir Singh, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Hairston, Walters and Walsh, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

On March 25, 2005, Superbass Tournament Trail, Inc.
(applicant) applied to register the mark shown below on the
Principal Register for services now identified as
“organizing and conducting fishing tournaments” in
International Class 41.1

1 Applicant claims both first use anywhere and first use of the
mark in commerce in Class 41 in 1997. The application also
covers Classes 16 and 25; the refusal in this appeal is
restricted to Class 41.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 76634358
2

The Examining Attorney required a disclaimer of “SUPERBASS
TOURNAMENT TRAIL” “… because it merely describes a feature
of applicant’s goods and services.” Office Action 1 at 1.
Applicant ultimately provided the disclaimer as required.
The examining attorney refused registration in only
Class 41 on the ground that the specimen failed to show use
of the mark with the Class 41 services. Applicant
responded by providing substitute specimens. The Examining
Attorney rejected the substitute specimens and finally
refused registration and applicant appealed. We reverse.
Section 1(a) of The Trademark Act requires that an
applicant submit “specimens or facsimiles of the mark as
used” as part of the application. 15 U.S.C. § 1051(a)(1).
The Act provides further that a mark is “in use in commerce
. . . on services when it is used or displayed in the sale
or advertising of the services.” 15 U.S.C. § 1127. The
Trademark Rules likewise specify, “A service mark specimen
must show the mark as actually used in the sale or
advertising of the services.” 37 C.F.R. § 2.56(b)(2).
Ser No. 76634358
3
In this case we conclude that the original specimen
filed with the application shows use of the mark in
connection with the Class 41 services, that is, in the
advertising of “organizing and conducting fishing
tournaments.” The original specimen is reproduced below.

Ser No. 76634358
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The original specimen is the “cover” or first page of
the January & February 2001 issue of a magazine or flyer
applicant distributes under the title “SUPERBASS Tournament
Trail.” The title appears at the top and to the left on
the first page or cover of the magazine. The mark appears
in the upper right corner next to the title.
The first office action did not explain precisely why
the Class 41 specimen was not acceptable; it simply stated,
“The current specimen of record comprises periodical pages
and a shirt and is unacceptable as evidence of actual
service mark use because it does not show the mark as it is
used in commerce in the sale or advertising of the
particular services, as listed in the recitation of
services.” Office Action 1 at 2.
In response, applicant submitted substitute specimens.
The Examining Attorney rejected them once again. Office
Action 2, states, “The current specimen of record is
unacceptable as evidence of actual service mark use because
it does not show the mark as it is used in commerce in the
sale or advertising of organizing and conducting fishing
tournaments. Although a specimen does show tournaments,
the mark does not appear in connection with that specimen.”
Office Action 2 at 2.
Ser No. 76634358
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Applicant responded and provided still more specimens.
Once again, Office Action 3 rejects the specimens, stating,
“The current specimen of record is unacceptable as evidence
of actual service mark use because it does not show the
mark as it is used in commerce in the sale or advertising
of organizing and conducting fishing tournaments. Although
a specimen does show tournaments, the mark as it appears on
the drawing page does not appear in connection with that
specimen.” Office Action 3 at 2 (emphasis in the
original).
Applicant responded once again, with another specimen.
The fourth and final office action states, “The current
specimen of record comprises magazine pages, such as, the
table of contents for a magazine, and is unacceptable as
evidence of actual service mark use because it does not
show the mark as it is used in commerce in the sale of or
advertising of ‘organizing and conducting fishing
tournaments.’”
In its appeal brief, applicant states, “When applicant
submitted the application, it submitted as a specimen a
page from a flyer and advertisement promoting the SUPERBASS
TOURNAMENT TRAIL fishing tournament throughout the year
2001. The service mark was clearly identified in the upper
right corner of the advertisement.” Applicant’s Brief at
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6
3. Applicant also explains that its “magazine” specimen is
used to report results of its tournaments and to advise
participants about future tournaments. The brief states
further, “It is just not understood where the Examiner is
coming from, or why he does not understand how Applicant’s
usage of the mark is clearly set forth for promoting his
services of organizing and conducting fishing tournaments…”
Id. at 4. In its reply brief applicant emphasizes that its
magazine is mailed out to many of the prominent bass
fishermen in the country. Reply Brief at 2.
Finally, in the brief, the Examining Attorney provides
a fuller explanation of the basis for rejecting the
specimens:
In this case the applicant has provided several
specimens for Class 41. Its specimens include what
appear to be a magazine or a flyer cover, a photo
within the magazine of a trailer, page 71 of a
magazine with a tournament schedule, and the
introduction page with a table of contents.

Where the mark is used in advertising the services,
the specimen must show an association between the mark
and the services for which registration is sought. A
specimen that shows only the mark, with no reference
to the services, does not show service mark usage
(citations omitted).” Examining Attorney’s Brief at
3.

Thus, it appears that the Examining Attorney has
rejected the specimens, including the original specimen,
because the references in the specimens are not
Ser No. 76634358
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sufficiently explicit or detailed in identifying the
services identified in the application.
First, we note that the original specimen, which has
been identified by both applicant and the Examining
Attorney at various points as a magazine, flyer or
brochure, serves an advertising function. Whatever one
might call it, applicant explains that it is distributed to
participants to inform them about its tournaments.
The heading of the specimen includes the wording
“SUPERBASS TOURNAMENT” twice, once in the mark and once in
the title. In requiring the disclaimer of this wording,
the Examining Attorney recognized that it was descriptive
of the services. In fact, “fishing tournaments” is the
operative phrase in the identification of services. This
is what applicant does.
The specimen also includes references to “Tournament
Director,” to tournament results and standings, and to the
“2001 Team Schedule” and “2001 ProAm Schedule.”
The references to the identified services are more
than sufficient. See In re Ralph Mantia Inc., 54 USPQ2d
1284, 1286 (TTAB 2000) (Inclusion of the word “DESIGN” in
mark on letterhead, envelopes and business cards held
sufficient to associate mark with “commercial art design
services.”).
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We find the Examining Attorney’s reliance on cases,
such as, In re Adair, 45 USPQ2d 1211 (TTAB 1997),
misplaced. In the Adair case, the applicant used its mark,
TREE ARTS CO. and design, on labels affixed to decorated
Christmas trees and claimed the specimen also showed use in
connection with the service of designing handcrafted,
decorated Christmas trees. Id. The nature of the
specimen, the mark and the context for the use differ
substantially from this case. In this case, the specimen
is a form of advertising, and it refers to the service.
Furthermore, the context within which it is used shows a
clear association between the mark and the identified
services. See In re Ancor Holdings LLC, 79 USPQ2d 1218,
1220 (TTAB 2006); In re International Environmental Corp.,
230 USPQ 688, 690 (TTAB 1986). We likewise find the other
cases cited by the Examining Attorney distinguishable.
Accordingly, we conclude that applicant’s original specimen
is acceptable.
Finally, the Examining Attorney objected to certain of
the substitute specimens on the additional ground that the
specimens did not show the mark as it appeared in the
drawing. Although the Examining Attorney did not object to
the original specimen on this ground, for completeness we
note that the mark in the drawing and the mark in the
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original specimen, which we deem acceptable, are in
agreement. See In re 1175856 Ontario Ltd., 81 USPQ2d 1446,
1448 (TTAB 2006).
Decision: The refusal to register for failure to
provide an acceptable specimen of service mark use is
reversed.